EU Transition Trade Marks Registration

Article by Ahmed Elsaghir

Trade Marks and BREXIT

Trade marks are signs which are used in connection with a product or services to distinguish it from other similar products or services. In many countries, registration creates a rebuttable presumption about the proof of ownership of the mark.

In general, registration of a mark has effect in the territory only in which the registration occurs. This means businesses must submit separate trademark applications in each country, following the local laws where they seek protection.

The EU was able to harmonise registration process of trade marks among the union. An applicant can register his trade mark by a single application to the European Trade mark Office (EUTM). Such registration, if successful, becomes effective amongst the EU Members. The application of a trade mark under the EU system is unitary in its character. Therefore, if any EU member raises a successful objection, it overrides the entire trademark registration process.

The Effect of BREXIT on registered Trade Marks

After BREXIT the registered marks via the EUTM application have no effect in UK. However, the UK government has created an automatically parallel register free of charge for every registered mark in the EUTM.

Transitional Arrangements:

a. If at the time of BREXIT, 31 Dec. 2020, pending EUTM applicants can claim UKIPO priority, blocking third-party UK registrations for the same or similar marks post-BREXIT.

b. Act. 139 of the EU Trade Mark Regulation gives the right to an EU trade mark registrant or applicant that his registration or application has ceased to exist, withdrawn or refused within the EU to request for a conversion of his registered mark or application to a national application within a member of the EU subject to a three months limitation period. The transitional arrangements allow a registrant or an applicant whose application ceased to exist, withdrawn or refused in the EU as of 31 Dec. 2020 to claim priority rights before the UKIPO within the 3 months limitation period.

c. Applicants with WIPO filings before 31 Dec 2020 can claim UK priority by applying within a set window.

Under these arrangements, applicants can claim priority before the UKIPO even if they submit beyond the regular six-month deadline. However, this transitional period ends on 2 October 2021, after which applicants lose the ability to claim priority.

What can GOOD LAW INTL® help you with?

Filing a new application to UKIPO and claim your priority rights from a previous application in light of the above rules even if the six months period has lapsed, this arrangement is up to 2nd of Oct. 2021

If you obtain an injunction boarder measure in EU post 31 Dec. 2020, you will need to apply for a separate injunction proceedings in accordance with the UK Laws to cover all Europe.

If your license agreement references a trade mark registered under the EU system, you need to amend the clauses to cover UK marks. Reluctance to do so may imply that the licensee waives their rights in the UK.

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